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The Vegas Golden Knights Suffer Their First Defeat

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Trademarks

The author looks at the PTO's rejection of the new Las Vegas hockey team's trademark
registration.

By Joseph G. Vernon

Joseph G. Vernon is a principal attorney in Miller Canfield’s Detroit office, where he represents
and advises clients regarding contract and intellectual property matters. His background
as a varsity athlete in college and law school provided a foundation for the work
he does in the sports and entertainment field, where he represents and advises athletes
and entertainers about their intellectual property rights.

Just a few weeks after revealing its name, logo, and color scheme amidst confetti
cannons on the Las Vegas Strip, the Vegas Golden Knights, the National Hockey League’s
newest expansion franchise, suffered its first defeat—this one off the ice—at the
hands of the U.S. Patent and Trademark Office.

On Dec. 7, 2016, the PTO issued an Office action in which it rejected the Golden Knights’
application to register “VEGAS GOLDEN KNIGHTS” as a trademark.

Why? Because consumers might confuse the Golden Knights’ mark with one already registered
and owned by The College of St. Rose, a small, private college in upstate New York
whose athletic teams are also nicknamed the Golden Knights.

Without a trademark registration, the new franchise’s ability to protect against the
unauthorized use of its name and logo is inhibited, and its own use of the name and
logo will be subject to challenge.

The Likelihood of Confusion Standard

The PTO relied on Section 2(d) of
The Lanham Act, which bars the registration of any trademark that so resembles an existing registration
that it would likely cause consumer confusion.

The determination of whether an applicant’s mark is likely to cause confusion depends
on a number of factors, including the similarities between the marks, the similarities
among the goods and services associated with the marks, how those goods and services
are marketed and sold, the fame of the prior registered mark, and whether there is
evidence of any confusion in the marketplace.

The PTO’s Rejection of the Golden Knights’ Application

The PTO found that the marks are “identical in part” and that they share the same
“dominant wording” and “overall commercial impression.”

The PTO also found that the services offered by both the professional hockey team
and the college are similar in nature because “both offer entertainment of a kind
available in the same venues, broadcast on television, and that is generally available
to the same class of consumers.”
In support of its findings the PTO cited a number of statistics evidencing the popularity
of collegiate sports in general, and noted that since college players are often drafted
by professional teams, the same fans typically follow both levels of sport.

The PTO concluded that there was a likelihood of confusion between the two marks and
refused to register the Golden Knights’ mark. It referenced an overriding concern
not only to prevent buyer confusion, but also to protect the prior registrant “from
adverse commercial impact due to the use of a similar mark by a newcomer.”

The Golden Knights’
Next Steps

Will consumers really confuse the trademark of a Nevada-based professional hockey
team with that of an upstate New York private college? Will the sales of NHL merchandise
really impact the sales of the small college’s merchandise?

The franchise now has an opportunity to provide its own answers to those questions
by filing a response, in which it will try to demonstrate that its mark and the goods
and services it plans to offer are different than, and unrelated to, those offered
by the college.

The Golden Knights may point out that The College of St. Rose does not have a hockey
team, that its other teams do not play in professional sports venues, that their games
are not often televised, and that its athletes are rarely if ever drafted by professional
sports teams.

The franchise may also be able to show that the college’s merchandise sales are limited
to current students and alumni, who will not be confused and whose buying patterns
will not be affected by the presence of a similarly named professional hockey team
in Las Vegas.

The team can point to the many other sports teams that use a “Golden Knights”
or “Knights” mark, and provide statistical evidence—if available—of a lack of actual
confusion or any potential future confusion.

The Golden Knights may ultimately suggest that while the PTO’s findings could apply
more suitably to a major college athletic program, there is no risk of confusion here
because The College of St. Rose’s athletic program and brand are not particularly
renowned (with no disrespect intended to Jimmy Fallon’s alma mater).

The PTO does not profess to be an expert in every applicant’s field, and it invites
rejected applicants to submit evidence and arguments in support of registration in
their responses.

While the Golden Knights can probably mount a strong argument, the biggest problem
the franchise faces is one of timing. Players are set to hit the ice in 10 months
and the team is at a critical juncture in terms of completing sponsorship deals, negotiating
television rights, and beginning to sell merchandise and drum up excitement in advance
of the inaugural season. It will take at least several months to reach a final resolution
before the PTO, and a protracted dispute may engender unfavorable public perception,
and the ire of the league.

The most likely result will involve the negotiation of a consent agreement with The
College of St. Rose, through which the Golden Knights can secure the rights to use
the name.

Post-Game Analysis

Some have viewed the rejected application as just the latest evidence of a botched
launch, citing technical glitches at the release party and last week’s reports that
the U.S. Army may not be pleased with the use of the name, since the Army’s parachute
team is also nicknamed the Golden Knights.

The name was not selected without care, however. The franchise also applied to register
several other marks—including the Silver Knights and Desert Knights—soon after the
franchise was awarded on June 22, 2016.

It reportedly refrained from using “Black Knights” in deference to the Army’s athletic
teams, and “Knights” in order to avoid any conflict with the Ontario Hockey League’s
London Knights. Team owner Brian Foley also reportedly cleared the use of the name
with the Clarkson University Golden Knights, a school with a storied Division I hockey
program.

It is unclear if the team also reached out to representatives at The College of St.
Rose, but it is possible that given the college’s lesser athletic profile and lack
of a hockey team, it was deemed a lesser risk.

Regardless, as the team stated in a press release, “Office actions like this are not
at all unusual.” The rejected application highlights some of the difficulties inherent
in selecting a team name and coordinating a splashy announcement, an effort that requires
a thorough search of existing trademark registrations, the filing of an application
to register the mark, and the negotiation of any required consent agreements.

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